First off "hi". This is my first post here, and I'm glad to have found this forum out of all the previous ones I've searched looking for some advice or tips regarding domain names. I'm a recovered domain name addict, and develop sites based on my family's ideas & time available. I recently got my first legal notice regarding one of my few domains, as follows: ==== It has recently come to our attention that you have registered a domain name that mimics the famous eBay name and trademark and are currently operating a web site under that domain name. As you are likely aware, the coined term “eBay†is one of the most distinctive and famous brands in the world. eBay enjoys broad trademark rights, which are registered as a trademark and protected in the United States and many countries around the world. We are concerned that your registration and use of the domain name castillionbay.com infringes and/or dilutes the distinctive eBay trademark. Infringement occurs when someone, without authorization, uses a trademark that is identical or confusingly similar to a trademark owned by someone else. Trademark infringement occurs when this unauthorized use confuses consumers to falsely believe that the two parties are related to one-another, or that the true trademark owner is either endorsing or sponsoring the activities of the infringer. Trademark dilution occurs when the unauthorized use is likely to lessen the distinctiveness of the true trademark owner’s famous trademark. Your use of “bay†in your domain name is likely to confuse consumers and/or lessen the distinctiveness of the famous eBay brand. “eBay†is a fanciful trademark. Neither “eBay†nor “bay†describes online trading or e-commerce in any way. Therefore, it is likely that you chose your domain name because of eBay’s famous brand and to capitalize on the goodwill associated with that brand and this is a problem. Federal and state laws, including the Anticybersquatting Consumer Protection Act of 1999, provide for serious penalties (up to $100,000) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes or dilutes another’s trademark. Infringers who have been notified that their use is infringing, but do not cease, may also be considered “willful†and could be subject to additional money damages and liability for attorney’s fees. Having received this email, you are on such notice. eBay diligently protects its famous brand through legal proceedings, and courts and trademark offices have ruled on many occasions that the use of “bay†as you are using it violates eBay’s rights. For example, in November 2007 the United States Court of Appeals for the Ninth Circuit cited evidence that “the use of a generic word plus ‘bay’†– as you are doing – “would lessen the distinctiveness of eBay’s trademark,†and held that such a name and associated domain names both infringed and diluted eBay’s mark in violation of applicable law. In addition to court and trademark office cases, we have filed numerous successful cybersquatting complaints with the World Intellectual Property Organization’s arbitration panel against domain names that infringed the eBay mark and have succeeded in all those matters. While eBay respects your right of expression and your desire to conduct business on the World Wide Web, eBay must enforce its own rights in order to protect its valuable and famous name. We appreciate that you may have registered castillionbay.com without full knowledge of the law in this area. Nonetheless, under the circumstances, we must insist that you immediately stop using the domain name for any purpose, not sell, transfer, or offer to sell the domain name to any other person, and simply let the domain name registration expire. In the meantime, the domain should be inactive and should not point to any content. Just to be clear, eBay does not desire to interfere with any legitimate business you may be conducting. We are simply asking that you offer those legitimate services under a name, mark and domain name that is not likely to confuse consumers to believe that your company on one hand and eBay on the other hand are related and/or affiliated. Please reply to this email and confirm that you will comply as requested. If we do not receive this confirming email, we will have no choice but to escalate this further and take whatever action that may be required to protect eBay's trademark rights. Thank you for your anticipated cooperation. Sincerely, Edith eBay Legal Department ==== Although in this day & age it's seems nearly impossible to prove no bad faith intentions or trademark infringement / dilution, it is true this domain name was thought up by my mom, before she even had used the internet or heard of ebay. I registered the domain name in 2002 for her and her "great idea" of selling bottles with custom messages inside. The name came from: castaway "cast" and million "illion" and "bay" is where the bottles came from = Castillion Bay. The bottle selling lasted for a few years (2 or 3 or 4) before she got bored and we started selling her other "great ideas", eventually leading to belt buckles she made on there instead, and I subsequently added some jewelry, too. Fast forward to 2010 and I get the email above in the end of November. Never had we named, advertised, or linked ebay on the domain, in any fashion, or offered any sort of auction related anything. From email headers I see markmonitor.com services is involved in sending out these emails automatically on ebay's behalf to domain owners of names with "ebay" and even just "bay" strings in the name. So apparently it just came to my domain name on their lists. As absurd as ebay's claims are, there's no funds for legalities, so there's no way I can fight to keep the domain name. My question is really how on earth to avoid this type of situation in the future! For instance, I toyed with the idea of simply changing it from Castillion Bay to Castillion Cove, but am so disgusted at this point I decided not to, because hypothetically speaking, what if in the future there's an eCove, uCove, iCove, that becomes horribly popular? What should I do, or really any of us domain owners do, to keep from having to go through this whole ordeal again (removing site content, re-establishing self under a new name, etc.? I'm so very frustrated and will be thankful for advice!
I see no case for ebay.. It could be an automatic send because you are using the word "bay" at least I do not think they would have a case for what you are using it for... "bay" by itself means alsmot nothing until you add something to the generic term...ie: ibay, ebay, southbay, etc... and I think for like $30 - you can contact an online legal atty, send him all the info, ebays letter, your domain, and get an expert opinion from the online attorney.... Of course if you used this domain, then you probably would have problems: http://castillionebay.com/
First to use in commerce establishes rights to a mark in its usage classification. eBay's usage predates yours. You also changed your usage of the site to one that more directly competes with eBay selling of merchandise. Having said that, Mark Monitor sends out thousands of letters and it is likely that they picked up on your domain for the use of "bay" combined with the merchandise. A letter from Mark Monitor does not mean eBay has decided to take legal action. On the other hand, if eBay decides to pursue the matter they will win by default and they have been known to spend six figures or more in protecting their intellectual property rights (Perfumebay.com vs eBay). Had your domain been used to market a local condo development, then my guess is that you would not have heard from them. In the future, if you are going to build a brand, pay for a trademark search. That will eliminate most of the potential problems. Once you are using the domain in commerce, your rights are established as long as you don't change the usage in a way that might conflict with another existing usage. Forget what the above poster has stated. He has proven over and over that he knows nothing about IP law. No IP attorney is going to take and review your case for anything close to $30. Good IP attorney's (who know what they are doing) charge $350 an hour and up. I would be surprised if you would find one willing to take the case without a $5K or $10K retainer. You would likely have some difficultly even finding a good IP firm to take your case and it certainly wouldn't be worth going through the courts over this domain and spending what could easily amount to hundreds of thousands of dollars in legal fees. Personally, I wouldn't consider turning over the domain unless you hear from eBay (or someone other than Mark Monitor). While they could sue you, I think you would be given a chance to turn over the domain before they actually brought suit.
Sometimes I just wonder how much you really know... to tell someone just because another has money, then they just win by default.... Once again, you have failed to prove yourself with knowledge... I did not mean he could hire a brick and mortar atty for $30...there are prof legal sites that deal with all types of legal matters, including internet/IP/trademark, that offer legal answers for $30, and they are educated and degreed attorneys... and proper english is "he has" not "he have" Please do not be jealous.... or maybe you just like attacking people.... then again, i am not the one playing attorney....
This coming from someone who doesn't even know what a DMCA is and is too lazy to do any research. If a US registered mark holder sues you, and you decide to fight it through the courts, you will spend hundreds of thousands in legal fees. If you win, you should not expect to be awarded anything - not even your legal fees - you get to keep the domain. If you lose, you can be ordered to pay damages plus treble their legal fees and lose the domain. Ebay dropping a million in legal fees is nothing. I would say the vast majority of DP uses do not have hundreds of thousands to spend to spend on a legal fight for a domain that produces little income, and even if they did, it likely wouldn't be a smart financial decision to do so. If someone can afford to drop six or seven figures on principal alone, then more power to them. In the real word, it doesn't happen often. It's always the uneducated idiots like yourself who are quick to give out bullshit legal advice and say "fight" when they themselves wouldn't (couldn't) do it because their legal experience = their bank account balance. I have been involved in dozens of IP cases and spent hundreds of thousands of dollars in legal fees even though we have never lost a case in court. You on the other hand, have zero actual experience. $30 to an experienced IP attorney to review a case and give you specific answers? LOL!!! They are certainly the right ones for you.
Thank you for sharing this information about avoiding potential problems. From what I've been reading while trying to figure the "right" process to take: 1st: trademark search (USPTO) 2nd: trade name (register with state) 3rd: domain name 4th: use in commerce 5th: register trademark (USPTO) I'm cautiously concerned about the time frame between using in commerce and registering a trademark. From the trademark searches I did do, there were gaps of years (in some results) between 1st use in commerce & date applied for trademark, while other results showed only a few months between 1st use in commerce & date applied for trademark. I'll have to find out if there is a minimum time frame to wait between 1st use in commerce & trademark registration, or if a trademark application can be as close as the day after 1st use in commerce. But before I go that far, would the steps 1-5 be the proper order to do things to have the best chance of avoiding problems?
In the US, you don't need to register a trademark to establish rights. It's called a "common law" trademark. A Federal Registration does give you some more rights and also serves as a warning to others who mistakenly think that you need to register a mark. In theory, a common law mark is as valid as a registered mark. A registration filing also establishes a date. Because trademarks do not need to be registered, the search to prior usage is very important and will run you a few hundred dollars. They will also included searches for possible phonetic, foreign spellings, similar spellings. While no search is a guarantee, it will bring to your attention many of the potential conflicts with existing usage. If I was going to register something like "purple turkeys" for a t-shirt shop, I would use google to search for any possible existing usages. I would then check the USPTO site. If everything seems ok, I would then have a trademark search done. While you can file for a trademark yourself, it is something that you have an attorney do unless you fully understand the process. A single mistake on a filing will cause your application to be rejected and you need to start over (and pay) again. I would figure about $1000 to have this done - give or take a few hundred dollars. Before a trademark can be registered, it need to be used in commerce. You can file an "intent to use" to establish a date, but it needs to be used within (I believe) 6 months. This is often done by large companies that are worried about leaks from employees. It's very common to have a much earlier "use in commerce" vs the date the mark applied for. "use in commerce" may be subject to proof in a dispute, while the date the mark was applied for is set in stone. After you apply for your registration it needs to be reviewed by an examiner who checks for possible conflicts against other registered (not common law) marks. They will either accept, reject, or suggest category changes. If it is accepted, it goes for publication - and that is what IP firms watch to see if they think your application may infringe upon their clients marks. They have a period of time where they can contest your application. They can also apply to cancel your mark for the next 5 years. After 5 years your rights are pretty much cast in stone as long as there was no fraud involved in the process - so a total of wait of about 6 years. If your usage will not be limited to a single state, then I would skip the state registration altogether. It's pretty rare to have an internet based business limited to a single state and a federal registration offers more protection.
"common law trademark" - interesting, another term to search for with google After this week's sleepless nights over a "suffix" of "bay" which I never ever would have imagined, and starting all over, a few hundred dollars seems well worth it! The timeframe of 6 months seems to be correct (though apparently up to 5 extensions of 6 months each can be applied for), according to: Notice of Allowance Issues for Applications Based on an Intent-to-Use the Mark in Commerce "If the mark is published based upon the applicant's bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about twelve (12) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either: (1) Use the mark in commerce and submit a statement of use (SOU); or (2) Request a six-month extension of time to file a statement of use (extension request)." from: uspto.gov/trademarks/basics/next.jsp (sorry I was not able to include a "live link" according to the board message shown when I added this response post) I think making sure records are retained (forever) for a concrete first use in commerce date is a really important point that most people like me wouldn't think about - until or unless the time came where circumstances caused them to need that date. I'm going to research more to see if I can find what's considered typical/acceptable proof for that, too. I really appreciate your comments and am trying to absorb it all quickly enough to respond without sounding too incompetent (dumb). It just takes me a while to really wrap my head around so much information as on the USPTO website, and countless google results. Thank you for spending the time on your purple turkeys example Understandable concepts are such a relief, thank you!
Guys, when in doubt, listen to mjewel on these topics. Despite what the other poster said, mj knows his stuff. period.