I vehemently disagree. Please see my previous post. Proxify was in use way before this company used it. Agreed, and this supports my previous statement.
According to their trademark filing, they have been using "Proxify" since 4/14/2003. The vast majority of postings in the google groups were made long after this, and just because a word has been used in a newsgroup, it is not a basis for a trademark claim. It's use certainly wouldn't support a claim for being a generic term. A trademark has to have been being used in commerce for the trademark classification and there is absolutely nothing in google groups that suggests it was being used as "providing anonymous transmission and delivery of information over global computer networks". Even if we were talking about a common word, it does not mean you cannot trademark it. "Apple" was in use long before Apple Computers trademarked it, and their claim for trademark as seller of computers is uncontestable. Although there is nothing to support the claim, even if "proxify" had been continuously used as "providing anonymous transmission and delivery of information over global computer networks" by another company before "Proxify.com" it would their infringement claim, not a claim that could be made by someone who had a first usage after 4/14/2003. The domains that were mentioned were registered this year, there is no possible first usage claim as the trademark registration pre-dates them.
I do believe that they only have a case under such an event if you are delibratley or not, trying to mislead people into thinking that youre site is theirs. As they do not only own the word proxify (To use is such a context) but any similar variation that could confuse the public. To take the Apple exapmle, Apple, only owns that word in relation to Software, hardware and ICT, as i couldnt tommorow set up a shop called, Apples' for example. But could setup a shop called Apples' if it sold furniture for example. Copyright law is very confusing, so I would be weary. If I was in youre situation (As i assume you are not a lawyer yourself) I would get legal advice, possibly, on an infomal basis, i.e no contract, so no liability involed. Think long and hard, and dont just give up IMO.
Many parties are prepared to go the whole nine yards regardless what you've intended to do with the domain name as long as it bears their trademark. It's a matter of weighing your risks and rewards, whichever is higher. And it's trademark law that's involved here, not copyright. I suggest a whole new thread be started on the subject since it appears the OP's original issue has already been resolved, making this thread moot, I think.
I do not disagree of the registration. I do think that 19 references I saw were close to the industry. Let's not forget we only checked a single source. My argument would be that the word is already used in the industry, and no trademark should have been granted for the "word", other than with the look and feel. i.e. [SIZE=-1]a word, phrase, symbol, or design, or combination thereof, that identifies and distinguishes the source of the goods or services of one party from those of others. What I think UpsideOut did not do is a common law research prior to registering the Trademark, nor did the PTO. A shame, as this happens all the time. I lost hundreds because of a lousy attorney not doing the proper research. As for the "Apple" case - Apple does not have a Trademark just on the word "apple". They have it with combination of font, color scheme and what industry is it in. Apple did not get their trademark so easily, as they have went through several suits with Apple Corp, the Beatles' publisher. Take a look at acme, eagle, genesis, etc. There are multiple trademarks, and common law marks for these names. All this is of course gets exacerbated by the Trademark laws not scaling well within the Internet. If I register acme.com, apple.com who owns it?[/SIZE] The only thing I can think of UpsideOut use is the federal Dilution Act, but they lack the actual volume behind them to claim it! They lack distinctiveness, lack of time, lack of advertisement, lack of recognition, etc. They can't even claim it as a famous mark. Well, I am not a lawyer. Personally, I would have fought it with tooth and nail, out of principle. I know I would have had several free legal support available to me. I would have made the whole thing cost them more legally and in negative publicity than changing their name to potatoe.
It doesn't make a bit of difference if the word had been used before if no one had used it, and continued to use it, as a proxy service. You are incorrect about the Apple trademark. It is a registered wordmark. Their logo is also a protected mark. To answer your other question, apple.com could be owned by anyone because it is a generic term. What you couldn't do is infringe on apple computers trademark rights (classification) example: selling computers or any other product that is similar to Apple Inc's business. If you did own apple.com and wanted to sell apple seeds, you would have no infringement problems. Apple cannot be trademarked for baked goods, but for selling computers the usage was unique and able to be trademarked. Proxify is not a common word and offers more broad protection. Trademarks are granted by classification and do not automatically give you exclusive rights to the use of the term in all situations. What is does give you is exclusive right to the use of a term in a particular classification(s) - in this case, operating a proxy service. If you wanted to start a t-shirt company called "proxify" you might be able to without being guilty of infringement - the usage is completely different. In this case, the usage was the same - a proxy service. If you want to spend $30,000 on $25 worth of domains that were just registered, that is your right. If you win, you're only out $30,000 in legal fees. If you lose, you are out the $30,000 plus could be ordered to pay treble their legal fees plus damages. If you have six-figures to spend in legal fees you'll surely be able to find an attorney who will take your money. My first post advised to get the opinion of an intellectual property rights attorney, but I also realize that when you are talking about a nominal amount of money for domain registration, many people don't want to even spend a few hundred dollars to get an hours worth of advice. I've been involved in many trademark infringement cases and was simple stating my opinion that I wouldn't choose to fight a infringement claims based on the information that was posted.
You have more patience than I do to keep calmly and rationally explaining the basics to people. It seems many here lack a basic understanding of business, law, and simple economics.
Principles cost as well, don't they? Nothing comes without a price. Nissan and Microsoft got some degree of negative publicity for how they have handled their respective issues (nissan.com and mikerowesoft.com). But they are still in business as of this post because they're still able to give what their respective markets want. If you don't respect the rights of others, don't expect them to respect yours. More like making choices out of possibly misplaced passion. But...it's their own arses on the line.
@mjewel, Thank you for your rational response. Although I continue to disagree with you as your points have not convinced me otherwise, I lack the resources to research a more convincing point of my views, nor am I equipped to verbalize them. I agree, if someone does not have the willingness commit themselves to something like this both financially and timewise, it does not make sense. I would have asked the court for the accuser to pay my legal fees. If I won, I would be out of time, energy, and probably tons of aspirin, Maalox(tm) and such ...
Unlike European law, where you have prevailing party awards for attorney fees, the chance of being awarded attorney fees is extremely small under US law (given that no written contract exists). I believe you must prove 'extraordinary, malicious, wanton and oppressive conduct' which is rare. As long as the trademark holder acted in good faith or had at least some merit, you wouldn't get attorney fees even if you won. One of the advantages of having a Federally Registered Trademark is that it provides for treble legal fees in successfully protecting a trademark against infringement. This doesn't apply in situations of "common law" trademark disputes.
Former long-time customer of Proxify here, you shouldn't have given up the domains, for reasons already stated. Anytime you get legalistic emails like that, especially if they're questionable or spurious in nature, you should report it and wait before responding to it in any way. http://chillingeffects.org/input.cgi
I was thinking about this, since I recently bought a domain name called www.proxifymyspace.com which would techincally be in "violation of their trademark" If i am correct, all i have to do, when i get the C&D, if i do that is, is make the site about myspace templates, and then I would be okay, since it would mean that it is not what their site is about. Is that right?
If you use it for a proxy site first, they can take legal action against you regardless of if you change then change the content. The name alone would give them an argument for confusion regardless of if you put myspace templates on the site (you can't register MicrosoftSupport and sell dolls and expect to get around an infringement case). MySpace has also filed Federal lawsuits against sites using "myspace" in their domain name - so this domain name is risking infringement action from two different marks.
hmmm..wonder if i should just park the stupid thing and move onto another domain and not waste my time. but then again....*beats head against wall*
Lol. Not yet. Im technically not infringing on their copyright imo...so f-them...and if i am f-them even more lol. Though After I get some traffic for it, and get a good amount of sturdy visiotors, ill put it up on sale (if I get a C&D)
Two suggestions: Show it as Pro Xify Myspace on the page, put a tag line on the site like "Got Xify" and trademark Xify. Second, visit nissan.com to see how a trademark holder didn't win against a guy that claims 6000 years of prior use. I would have cashed in the 7 figure offer rather than fighting and registered deepsouthcomputerrepairshop.com.