Cease and desist letter from Microsoft

An bunch of ignorant arguments.

This has nothing to do with copyrights (you need to learn the difference).

You can have an informational site. You can't use their trademark in a domain name when the site relates to their product.

As far as having to go after "every other" domain - well, it's just a plain stupid statement and has no legal basis. Dictionary names can certainly be trademarks. You obviously have no legal experience whatsoever and really shouldn't be guessing on what you think the law should be. Last time I checked "apple" was a dictionary word yet is certainly a trademark. You need to understand the basics of trademark law and usage rights before you ramble on with a bunch of utter nonsense. BTW, what dictionary did you find ZUNE in?

Perhaps you would like to put up $100K for the legal defense of the OP?

Didn't think so....

 

As the former owner of the world's largest Zune website, I had NO problems at all with the trademark Zune for ZuneBoards.com. In fact, I know a handful of Zune webmasters that had no problems as well.

What our sites differ from your site is that we actually developed our sites, and formed a community 'fansite' for the Zune. I can totally understand, however, if one is exploiting that domain to make profit, and profit only, that Microsoft would claim TM rights.

I've had TM issues with a different domain, ZuneTV.net, but it was a kind message from a Zune employee, not a lawyer. Here's what it read:

We ended up moving ZuneTV.net to VidsForZune.com


Microsoft isn't trying to be a TM nazi, but they're simply protecting it, and from what it looks like, they might have a plan of developing the site as well. In fact, Microsoft SUPPORTS and ENCOURAGES Zune communities and fansites--after all, it helps them. Microsoft sponsored a few forums with swag and goodies to give out in contests, and they even invited some Zune webmasters to a visit in Redmond, WA @ Zune headquarters!

So in conclusion, just let that domain go! If you're really intrigued by the Zune, start a site on it that actually offers helpful information, praises it, and helps the Zune grow. If not, life goes on. 8)

 

as he hasn't come back, I'm wondering what happened. I can't believe people really think that this guy has a true legal defense against microsoft. I'm sorry, but I will protect all my property, including intellectual property, from anyone using it in a way I do not agree with. Microsoft doesn't have to go after every little domain, only the ones they choose. I would say I feel bad for the guy, but I really don't, he should have researched the copyright law before doing this.

 

I would also like you to consider the time..if you had registered that domain name before Microsoft registered the trademark, there is no way they can take it from you..

 

Domain registration date does not establish trademark rights. You have to be using the domain, and you cannot change the usage to ride the goodwill established by someone else. For instance, you own Trump.com and it is your real last name. You use the website for selling your line of t-shirts - Trump Shirts. Donald Trump becomes famous and opens casinos under his last name. You can't switch the usage of your site to be about Donald Trump, or anything to do with casinos. If you do, you can surely have the domain taken from you. (Ask the former owner of Madonna.com).

If you have a domain that was registered BEFORE a trademark was used, then the registration alone cannot be considered bad faith because the trademark did not exist at the time of registration - however, you cannot start using the domain in a manner that would infringe upon the trademark that was established by another company even if the trademark usage was established after the domain was registered.

If you buy an older domain, you need to make sure you are buying the associated goodwill (vs a straight domain purchase) if you want to use the previous owners usage to establish trademark rights - otherwise, your trademark rights start from the day you buy the domain AND your content is placed on the site.

 

Just because you received a cease and desist letter does not necessarily mean you are liable. You may have several viable defenses to a claim by Microsoft. Did you register the domain name before Microsoft first used the ZUNE trademark? Have you used the domain name in good faith? Has Microsoft known about your domain name but delayed in pursuing legal action?

 

YES but at least he will have more pull when trying to get financial gains for the domain ESPECIALLY if he can answer YES to this :

Did you register the domain name before Microsoft first used the ZUNE trademark?

 

Ever thought of taking the site offline completely and keeping the domain name?

I'm interested how that would stand. If domain names expire they get picked up by collectors and sold on.

Just a thought...

 

But, If you were to start micrsoft.com, and registered the trademark, you could sue microsoft for the same exact thing your saying... =/

 

It doesn't work like that. When you apply for a trademark, the examining attorney checks other registrations for prior usage. This includes similar and phonetic spellings. If they feel it conflicts with a prior registration, they deny the application.

Let's assume that the examining attorney at the USPTO doesn't find a conflict and approves the application. It takes about 6 years for a trademark to establish rights cast in stone. During these six years, anyone can come forward and contest or file to cancel the trademark.

The key to trademark rights are who used it first in a particular classification and continued to use it. You can't see someone using a name and then go out and Federally register the trademark and then go back and get them to stop using it.

Even if you filed for "micrsoft" and somehow the examining attorney missed it, and somehow microsoft attorney's missed it (and they monitor trademark applications on a daily basis) and you obtained a trademark AND you waited SIX YEARS for your mark to become uncontestable - you still couldn't sue microsoft and prevent them from using as they were using it before you.

Of course this is all hypothetical because there is no way you would ever be granted a trademark for such a similar mark.

 

The WHOIS record for the domain name indicates a registration date priorto Microsoft's dates of first use on their trademark registrations for maks incorporating the term ZUNE--but just by few months. A very interesting situaton.

 

Trademark Priority Date: May 29, 2006
Whois Created: 2006-07-11

 

OP, where are you?

 

LOL i was just going to come in here and make a funny comment like " I think La eMe " extorted him LOL

La eMe - WHATCHA KNOW 'BOUT THE DISCOVERY CHANNEL ? HOMES !

 

thats crazy. i cant believe he wont be able to get some kinda compensation for his site. hosting expenses for all those years or something to benefit him instead of establishing a positive reinforcement for free of charge to the zune name just so microsoft can TAKE the domain name and make millions off it when they make it something on later down the road.

 

I wonder if he got caught up in that law suit....that could explain him not being here, he may have had to sell his computer lmao.

 

Based on the whois information it looks like he has had the domain since 2006 and could make an argument that Microsoft abandon it's trade mark through non enforcement. 2 years is quite a while to not bother attempting to enforce a trade mark, but I am not a lawyer so what do I know.

 

The law doesn't require you to go after every single instance of infringement, but rather enforce your rights. Microsoft certainly spends a lot of money on enforcement to protect their marks and generally the more high profile your site, the bigger the target. This wouldn't be an abandonment issue as they are still clearly using the mark (it's 3 years for abandonment anyway). The claim would be for genericization - and legal costs would literally run into the millions and take years and years in the courts to try and prove such a claim - which would have about a zero chance of winning. It would be throwing good money after bad.