Domain name trademark infringement

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norfstar

Mar 11th 2005, 5:23 am

I received a letter from the lawyers of a games console company today demanding I relinquish control of a couple of domains (which I'm not using right now) that include their trademark.

Has this happened to anyone here before? If so, what did you do about it? The names don't mean that much to me so it's not biggie if I lose them - but I'd like a little advice on what can happen all the same.

joeychgo

Mar 11th 2005, 5:27 am

Fight them - tell them you have time and money invested - you bought the domains legally and have right to use them - but that you would consider selling the domains for $xx,xxx.

norfstar

Mar 11th 2005, 5:32 am

Fight them - tell them you have time and money invested - you bought the domains legally and have right to use them - but that you would consider selling the domains for $xx,xxx.

I like the position of the comma in that price :D.

Design Agent

Mar 11th 2005, 5:35 am

It depends...
Basically if you are using their trademark in you domain they will probably win.
In 2000 Madonna won a precedent. Her name was used as a porn site for a while. The guy who owned it tried to give it to a church called madonna or something but he lost.
You can read about it here and watch what happened (some of the links explain the case itself, some were porn)

http://web.archive.org/web/20001017101449/http://madonna.com/http://web.archive.org/web/20001017101449/http://madonna.com/ this is the decision from the World Intellectual property organisation in Geneva (WIPO)

joeychgo

Mar 11th 2005, 5:37 am

Try it - if they dont actually file a complaint in court they are full of hot air. Its a common ploy to send a letter from a lawyer - doesnt cost much and its little trouble to do. Most people freak when they get a letter from a lawyer - and do as they ask. Its a no risk way to intimidate you.

I had someone do it to me. Sent me a letter from their lawyer. I told them 15k or to F themselves.

Never heard back - that was 18 months ago and I stilll have the domain.

yfs1

Mar 11th 2005, 5:41 am

I told them 15k or to F themselves.

Although if its a major company (or one with a load of money) I wouldn't antogonize them with the F U part. Explaining your legal standing can be much more effective. If you antogonize them, they may drag it through the courts. Even if you win in the end, its a path that can be very costly and time consuming.

Be professional about it and make sure you have the research/knowledge to back up your claims to the domain.

Design Agent

Mar 11th 2005, 5:45 am

Yeah, no harm in fighting it - if it doesnt cost you alot of time or money
or make them an offer you know they will accept, buy a different name and try to get to the top for their traffic.

I would ignore the lawyer and call their marketing dept.. threaten them with the coop network ;)

You might even be able to come to a deal trying to sell their products and provide information. Kind of licensed. You may even be allowed to use some of their content, giving you a high quality free site ;). Convince them to work with you, not against you. If you are professional enough you might get away with it.

norfstar

Mar 11th 2005, 5:56 am

Well it's a pretty big company, albeit a recent startup. They've got primetime TV commercials running right now on ITV (major UK terrestrial channel) so I assume they've got fairly deep pockets.

Naturally my intentions regarding the domains were honourable (wouldn't be casting a negative light on their product or advertising their competitiors) and I probably will go for contacting them directly about it rather than replying to the law firm.

Their ultimatum stated that I have 14 days to contact them to state I will cease using the domains and transfer them to the company - so I've got a fair bit of time to research this.

noppid

Mar 11th 2005, 6:01 am

joeychgo

Mar 11th 2005, 6:05 am

A cease and desist is of no value unless the court ordered it.

Exactly - thats a lawyer's intimidation trick. Meant to fool the meek.

norfstar

Mar 11th 2005, 11:49 am

Yep I'm aware the just because they sent me a letter doesn't make it legit.

I've posted about this on a few forums now and pretty much every response has been encouraging me to fight this - so the domain names involved if anyone is interested are gizmondoonline*com and gizmondolive*com.

Caveman

Apr 21st 2005, 8:05 pm

No need for them to go to court. All they would have to do (and probably will) is file a WIPO case against you. Do not under any circumstances offer to sell them the name. That will give them part of the proof they need to show bad faith use of their trademark.

Do a search on WIPO and do alot of reading up on this before making a move. You'll thank yourself later.

Blogmaster

Apr 21st 2005, 8:42 pm

Exactly - thats a lawyer's intimidation trick. Meant to fool the meek.
Exactly, it's 80% intimidation.

mhdoc

Apr 21st 2005, 8:59 pm

If you don't plan to comply, there is really no reason to respond. You give away a LOT of informaton when you respond. For example, they have proof you received their letter. Time deadlines only matter if there is a specific law governing the process.

Blogmaster

Apr 21st 2005, 9:38 pm

I too would ignore it. They are hoping for an email from you hoping you will write something which can prove that you have acquired the domain name in "bad faith".

01wojtowicz

Apr 22nd 2005, 1:49 am

they are trying to intimidate you

who are they or cant you tell us thius

uca

Apr 22nd 2005, 4:24 am

You might even be able to come to a deal trying to sell their products and provide information. Kind of licensed. You may even be allowed to use some of their content, giving you a high quality free site . Convince them to work with you, not against you. If you are professional enough you might get away with it.

This is a nice idea!

Although unrealistic in most cases unfortunately!

I have no direct experience myself, but I would be a bit concerned and would not ignore the letter.
If they want to fight and they're much bigger than you, they could kill you just with the legal costs, even if you would be bound to win, and I don't think you will, sorry.
And if you do ask for money, oh dear, as already said above, the judge is not going to appreciate it as much as you would.

There's really only one thing to do, ask for professional legal advice.
I know that's obvious and it's costly, but you can reduce the costs doing research for your lawyer (as not all are that well informed on these matters) and make sure he knows what he is doing, don't just choose a cheap one, in that case you might as well go by yourself.

If you choose to get professional advice, don't do anything before talking to your adviser and book that appointment quick!

Good luck and don't misunderstand me, I'm on your side! :)

Blogmaster

Apr 22nd 2005, 4:38 am

Ignore them!

uca

Apr 22nd 2005, 10:13 am

OK, let's say it's the other way round, what would you do if you were them, with money and on the right side of the law?

Then decide.

Blogmaster

Apr 22nd 2005, 10:34 am

Good call!

T0PS3O

Apr 22nd 2005, 11:03 am

If the letter wasn't by recorded mail, you can rely on the 10 million items lost by Royal Mail to buy time. Ignore them for as long as you can I'd say.

You could sell it to someone else :D

Most of those threatening letters I've seen are by obnoxious young 'professionals', just starting their career. Their job is to give hassle to as many as they can and they'll go after those who bite. Normally they even ask for an amount like £450 right away to cover their admin cost. You'd be a fool to pay that.

If you do contact them, don't contact the law firm. Go direct to a high up person in the company. Don't be defensive. You've done nothing wrong. Approach them like any other business associate.

clasione

Apr 22nd 2005, 4:52 pm

Caveman

Apr 22nd 2005, 5:04 pm

Nice article. The key in that case was a non-revenue producing, non-commercial site. If you place adsense on the site, you're pretty much guaranteed to lose the case. If you try to sell it back to them, they'll hit you with the UDRP rules stating the only reason you registered the name was so you could profit from their trademark (either by selling it to them or making money from their name).

My earlier post regarding WIPO was for intelecutal property. The correct orginization that handles domain disputes is UDRP. Have a look at http://www.icann.org/udrp/udrp-policy-24oct99.htm for more info.

Freebies

Apr 24th 2005, 4:36 am

Fight them - tell them you have time and money invested - you bought the domains legally and have right to use them - but that you would consider selling the domains for $xx,xxx.

Don't ask for any cash. If you do it will be easier for them to say you bought it for that reason. Just tell them you have a website in development.

Shoemoney

Apr 28th 2005, 7:54 am

sorry if you said but how did you recieve the letter? Was it certified mail or just a email? I have alot of experience in ths area and I can tell you to disreguard it unless it came certified mail from an attourney.

I have been on both ends of that. I have had to give up probably a dozen names by now or so just because it was alot cheaper then to fight a court battle.

One time I even had my assets frozen court ordered by a judge over copyright (that sucked). That was because I listened to people in forums tell me I had nothing to worry about and to tell them to F off. BE VERY CAREFULL. I was stupid and didnt seek the advice of a attourney but listened to people on the intarweb :rolleyes: . If you get a ciest and desist (judge ordered or not) sent to your house certified mail then the next step could be something very very serious.

If you honestly are not infringing on them or making money off of there name then there is nothing they can do (technically). But do you have money to goto court or to have your assets siezed? Money talks. Once a company has allocated legal resources to get a domain, unless you have a law firm who wants to work for free, it sucks.