Hello everybody. This morning I encountered a statement from a company saying I have to close or change my domain. There is this company called Abraham-Hicks and they teach spiritual stuff, I did a forum based on their teaching months ago BUT then got bored and changed it into an adult sites. The domain is registered as Abe-Hicks, even tho the domain is mine.. do they have the rights to tell me what to do even though I have nothing to do with their contents anymore? I mean.. if they claim Abe-Hicks is theirs then why don't they bother registered to themselves in the first place? If they want, I was planning to sell it to them.. is it possible.. can I do that? I believe I'm safe but not 100% sure so please tell me what you think. Cheers! Minh
if the name is trademarked they will win. especially since visitors to your site are probably looking for that guy.
Only if he is using the trademark. You can't copyright a name, or the 29 Abe Hicks found at "people finder" would likely all need to change their names. The Mr. Hicks would have a better chance going after you if you had your original content on the site....now, if I am not mistaken, you are pretty safe. Though, if he has cash to blow, he could drain your accounts by taking you to court anyway. You can sell it to them as far as I know as well.
You already used the domain in a way that infringed upon their trademark - which makes you liable. Even though you have since changed the content, it doesn't undo the liability. If I was you, I would get rid of the domain. They can likely prove a bad faith registration because of your prior usage and also since I'm guessing that isn't your name, so they are going to claim you registered the domain to ride their goodwill. Consult an IP attorney if you want to keep the domain, but if they sue you, you'll spend a heck of a lot of money in court (six figures).
mjewel is right on this. Furthermore, trying to sell them domain would only make their case that much stronger (cybersquatting laws). A trademark can legally be used by different people in different industries (Nissan Motors, Nissan Computers). However, there are two things against you here. The first being that you already used the domain in the past for a forum on the subject. The second is because you replaced it with porn. There are certain things that can (not always will, but can) lead to a form of trademark infringement because of the industry you choose. If your use of the mark tarnishes their reputation in any way a judge can rule that to be infringement.
Cool, thanks for the replies, But wait, it's true I was building a site around them.. but don't I have the rights to do / change business as I pleased? Besides, I create the OWN domain and I paid for it so it's mine until expires. So really, I think I have the rights.. to lets say I create another sites that sell books, games and marketing products but I STILL could use Abe-Hicks domain.. it's pretty ridiculous if one can not do that don't you think? I've heard that Digg.com and Facebook have spent $100,000+ to buy their domain off someone so I believe if Abraham-Hicks wants Abe-Hicks.. don't they have to buy off me? I'm also sure that if I create a site like Digg or Facebook and call it Diggone or iFacebook they couldn't do anything to me so why would this be any different?
"But wait, it's true I was building a site around them.. but don't I have the rights to do / change business as I pleased? Besides, I create the OWN domain and I paid for it so it's mine until expires." No, owning a domain name does not give you the right to infringe upon a trademark. Read the TOS when you registered the domain. "So really, I think I have the rights.. to lets say I create another sites that sell books, games and marketing products but I STILL could use Abe-Hicks domain.. it's pretty ridiculous if one can not do that don't you think?" You have already committed infringement - they could sue you for damages. Forget about his domain - write it off as a cheap learning experience. I am not kidding, you're talking about six figures in legal fees to see a case though the court process - and I'm not even talking about appeals. You should be thankful they just didn't sue you - they are offering you a way out. First you infringed upon their mark, then you pointed it to a porn site. You are going to be screwed if they decide to sue you. The mark is fairly unique - the more unique the mark, the more broad the protection. I think they could make a good case that ANY use of the domain was an attempt to ride their goodwill. What are you going to tell the judge? My name is John Smith, but I decided on Abe-Hicks without ever hearing about the trademark holder? Good luck on convincing the judge of that - but the argument is moot, because you are already liable for damages and infringement because of what you already did with the domain. "I've heard that Digg.com and Facebook have spent $100,000+ to buy their domain off someone so I believe if Abraham-Hicks wants Abe-Hicks.. don't they have to buy off me?" No, they don't. In fact they could sue you for some serious money. Offering to sell it to them is going to give them an even better case for cybersquatting (potential $100K fine). "I'm also sure that if I create a site like Digg or Facebook and call it Diggone or iFacebook they couldn't do anything to me so why would this be any different?" You really need to do some homework on intellectual property law. Trying to use either of those domains would almost certainly result in a lawsuit. You can't use another's name/mark to make a profit off the business they worked hard to create. You can't "squat" on a domain that is their trademark (infringement does not have to be exact, just confusingly similar). A registered trademark holder can also sue you for treble their legal fees - so you are talking about huge sums of money. You may not be worried about paying a judgment when you can't afford to pay it, but it could follow you for life. No credit, no ownership of anything that could be taken. Seriously, it's not worth it.
Great insights in here.. very informative. I have a question though, what if the person who registered the domain is from a non-Us country? You know what I mean.. there are countries who don't give a damn for copyright laws etc.
This has nothing to do with copyrights, rather trademark infringement. It doesn't matter where you live, the right to take a domain is decided by US law. For International infringement cases, there is the "Madrid protocol".
Thanks for your reply mate, what if the country isn't listed in the Madrid Protocol member countries list ? http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf - A gulf country called "Kuwait" isn't there.. just an example..
On keeping a domain, it doesn't matter where you live or register the domain - the domain will be taken without your consent in a WIPO action. For being able to evade paying on a lawsuit you would need to consult an attorney.
I would do a check and make sure they have a Tradmark on the name.. alot of places say there Name is Tradmarked ect yet they have not filed the paper work to make it so. if they have not Filed a Tradmark for that name you should be safe. many times i see people get emails saying that's our name you can't use it but depending on what the laws are where you live has alot to do with this if you are within the laws in your country then you can do as you wish.
Wrong. Wrong. Wrong. No filing is required to have a common law trademark in the US - and that is all that is going to matter unless perhaps you have a site that doesn't have US visitors.
Also, WIPO which handles domain disputes for all of the major TLDs recognizes common law trademarks as well. Even if they don't actually sue, they can go through WIPO arbitration to simply take the domain. Since WIPO is an arm of ICANN (which has direct control over the major TLDs) it doesn't matter what country you live in, their decision can effect anyone living anywhere.
If you have a name like abe-hicks.. u cud say u wana promote porn under ur name !!! an interesting excuse.. if you created that name in the intention of getting some free atention of the former site and you dun have any hold ( documentation , etc., ) then its better to get some cash and let it go...
A couple of questions will be relevant to whether your use of this domain name for an adult website constitutes cybersquatting. First, has Abraham Hicks developed trademark rights in that name/mark, such that consumers associate that name/mark with Hick's spirituality services. Second is there a likelihood of confusion between the Abraham Hicks mark and the domain name your registered? Third, have you used the domain name in bad faith?
if you domain is Abi-hicks and their registered trademark is Abharam-hicks , i dont think they can do anything to you