I currently own the domain www.iProxifi.com I got an email today from my host saying my account was suspended because the company Proxify thinks I am in violation. I registered this site before I even knew about proxify.com. What steps should I take? Here is the message I received (Jan 2, and it says they emailed me 12-24, and have included the letter below, neither of which I got...): We have not yet received a reply from you in response to our previous letter dated December 24, 2007 (included below). We reiterate that your wrongful registration and use of the domain name "iproxifi.com" (the "Domain Name") resembling the service mark PROXIFY owned by UpsideOut, Inc. D.B.A. Proxify (the "Company") places you in violation of the Company's federal, state and common law rights in and to the PROXIFY Mark. We also believe that these practices, to the extent that they infringe the PROXIFY Mark and otherwise violate federal law, may place you in violation of your agreements with your web-hosting and/or internet service providers, which thereby would result in still further liability imposed on you. We again demand that you comply with the steps that we have requested without any additional delay. We would, of course, like to resolve this matter with you as amicably as possible, but cannot do so if you continue to make use of terms that violate the PROXIFY Mark. If you cease and desist immediately from any further illegal use of the "PROXFIY" name and mark and settle this matter now, you may save yourself damages from the date of this notice. We do not withdraw or waive any of the damages, rights or remedies which may be available by reason of your conduct to date, and all such rights and remedies are expressly reserved.
If the company (UpsideOut, Inc) requests the domain then give I would give it to them. Your lack of knowledge is not a defense for trademark infringement (although it could be mitigating when damages are assigned in a court case). Other than that, I don't think there is much you can do. The trademark Proxify has been registered since 2006 and was first used in commerce in 2003. Your site was in the same market as the Proxify trademark. This one is over.
My main point is how is this trademark violation... That would be like saying AZoogle is violating Google.
No, it is not like saying that AZoogle is violating Google. First, while the two words have a similar ending (AZoogle, Google), neither contains the enitre word of the other. Second, while Google was around before AZoogle, Google did not start serving ads until the same year AZoogle started. At the time, Google did not have a trademark that related to a web advertising network. The law allows for the use of a trademark to be used by a different company in a different industry (see Nissan Motors v. Nissan Computers). In your case, while the spelling is different, your URL includes a phonetic duplicate of their trademark (Proxify, proxifi). It is well established in case law that misspellings are protected without them being registered by the original trademark holder. In addition, your site was in the exact same industry (proxies) as the company that holds the trademark, so there is no fairuse exception you could claim. You may not agree or like it, but the law is on Proxify's side on this one.
How about Sisco, Cisco, Sysco? There are no grounds to base trademark violation here (two of which deliver networks). I can think of many domains that are phonetics of others. By what I understand, if I don't run a proxy on iProxifi, I'm not in violation? I understand what you're saying, so what should I do. Hold the domain and not host on it? Turn it into a content site? Sell it to Proxify?
One can post as many supposed examples as they desire. But it all boils down to likelihood of confusion, especially if the trademark is unique and/or famous. Some are fought and won, while others aren't. But that argument about other examples hasn't really been known to shield others from potential liability. While domain name registrations per se don't necessarily infringe, it's that and what it shows that can create problems. Yours is a classic example of it. It might interest you to know others have faced the same situation as you: http://forums.digitalpoint.com/search.php?searchid=10161537 Whether you believe it's worth "fighting" for is up to you. If you do fight, then expect the other to force the issue. Some battles are not worth fighting for, though, especially if the costs are a tad higher than the rewards.
Just get a lawyer to write back. Best to let lawyers deal with lawyers under this circumstances unless you are ready to give up without a fight.
I actually wanted to suggest that. But given the domain name combined with its current content, any decent IP lawyer will tell you this one's a no-brainer, especially if the trademark holder is prepared to force it.
I can't believe that confusion serves as a ground for violation. There are many things that can be confused, and I cannot afford a lawyer, thats why I am here. Regardless, I will not fight, but do I need to give them the domain or can I keep it? I paid for it, the hosting, and advertising and will not let it go for free. They don't even need to pay for the registration, which is not right.
Uh, that's one of the points of a trademark: to prevent consumer confusion. It so happens that unique ones tend to have bigger chances of that. You actually don't need to do anything. But if you want this to go away, then one thing you can consider is talking to the mark holder to try to work out a compromise or so. Whatever you do, don't do gorilla chest-thumping or whatever.
First, estimate what the domain and web site is worth to you, then consider the legal fees. More often than not, even if you are right it is better not to fight as the legal fees can kill...... Unless it is something you treasure a lot!
I have talked to the holder, he wants me to transfer the domain to him right away. I understand that confusion is wrong, but my domain iProxifi, is very different then Proxify. Violation of using something like iProxify or myProxify makes sense. Nonetheless, there is no chance of typos or mistakenly going to my site over proxify. iproxifi does not show up in the trademark directory, and I could mark it for myself. However, I'm not willing to pay for such a small matter. I don't know why you say chest-thumping... they are really reaching far to take over my domain, on slim grounds. From the link you gave me, it convinced me to keep the domain even more... or sell it off.
I understand how you feel, keep cool, think clearly and then decide the best course. Do not make decisions while you are angry and frustrated.
Oh, here's why: While you believe they're overreaching, the trademark holder believes you're infringing. Both are entitled to what they want to believe, but it so happens one is prepared to enforce their belief further. One more thing: it might interest you to know that registration isn't required for a trademark to exist. Trademarks arise from use in commerce, although a registered one can have more benefits. Unfortunately potential trademark infringement is an inherent risk when doing domain names. No one's required to search for a party's trademark (which can be quite exhausting anyway), but it doesn't mean you're immune. Just read up some more on the subject in your spare time if you're up to it. It can be quite...enlightening.
Well, I just gave him the site. He wouldn't stop threatening me and started calling during the middle of the day while I was in class. If I had money, I would fight, but the domain is meaningless to me. Really, it's just the actions Proxify is taking to overtake others that pisses me off. They want to eliminate other proxy sites and monopolize their own - which isn't wrong, but the method they're using is.
A trademark holder has a variety of options to use to try to resolve an issue ASAP without filing a dispute if it can be helped. If a phone is what it takes, there's nothing necessarily wrong with that.
Hi, Hope I am not too late for this.... if I am late, I hope it will be useful for others out there... Corporations send C&D letters using lawyers because they can afford them. However, C&Ds are usually merely just "chest thumping". You can of cos engage a lawyer to "chest thump" for you as well... but I strongly advise against that. It would end up like a pissing contest with really no gains for both parties except the lawyers. As much as you think that they like to drag you in the court room, they don't... hence the chest thumping first. They always try to scare people to back down with just the C&D letter because most people are ignorant of their rights. Don't be one of them, KNOW YOUR RIGHTS and get them back... without even a lawyer PS: will post some helpful links later... SGFB