Domain issues NEED HELP URGENT!!!

I bought a domain related to a keyword "Barbie" for example barbie_x___.com. They said its infringement and request me to shutdown the site which I did. NOW they want the domain name transfer to them as well. What should I do?

Please notes: "Barbie" is trademark by "mattel" should give the domain to them or keep it?

Thanks

 

Unless you are planning to spend the time and money to dispute their claim to the domain name (which you would likely lose) you should give it up. You can't use it for anything and Mattel can file a dispute with ICANN and take it away from you, so there's no point in keeping it.

 

Mattel is one of the most aggressive companies to enforce their trademarks. They have been known to sue owners for damages even after a site was taken down. If you were using their site in a manner that was infringing upon their rights (mentioned any of their products) I would turn the domain over to them immediately. It will cost tens of thousands of dollars (and more) to defend a lawsuit if they decide to go that route.

 

This is a sad situation. I do not know what was the website and how it could infringe the trademark. Not all companies will do this, especially if you have a fan site promotion company's products in a good way. It is true that you use a trademark that was not yours without permission and they have the right to sue you. I have a friend who had the same kind of problem and he gave up the website. I am wondering if you can sell the website to Mattel to recover your money, but I do not think so. Anyway, it is not worth the fight.

 

The below domain names have the keyword "Barbie":

* http://www.antibarbie.com/
* http://www.alteredbarbie.com/
* http://www.pimpmybarbie.com/
* http://www.biggerthanbarbie.com/
* http://www.bebarbie.net/
* http://www.barbienation.com/
* Plus many more.

I have received a couple of notices in the past, but have always responded with a F*! I understand these companies are trying to "protect" their trademarks, but most are just abusive entities using strong-arm tactics to get their ways.

Good Luck!

 

Always make sure you are receiving emails from an authorized email (like ), and they are delivered to the email address you have in your WhoIs info, and not the email you have listed on the website. Some times, kids try to play with trademarks and get sites down due to ignorance of the site owner...

 

I recevied an email from www. kenyon dot com law firm which they claim represent mattel. What you think ?


my website is more like fan site...games, dollz, mostly just like any other FAN site out there....

 

Take it very seriously. You are likely in for a world of trouble.

 

If it has advertising running on it, or there is any attempt to make money (memberships) etc., it is a commercial venture and not a fan site that would qualify for fair use. If you want to keep the domain, hire an IP attorney and be prepared to spend some serious money. You didn't post the domain name (and you shouldn't) so your chances of success really depend on it - but it's clear that they "think" it is infringement - and that means you should be prepared for litigation.

It doesn't matter if there are thousands of other sites infringing upon their usage, it doesn't give you a legal right to do it - they know about yours, and will follow through. They have a legal obligation to enforce their trademarks. It doesn't matter to them if they need to spend a lot more than they will recover.

 

Kenyon indeed represents Mattel. Whether they'll go after all the other Barbie
sites or not is solely up to them to decide, despite how others feel about it.

 

Knowing that I would seriously recommend that you to contact Mattel with the letter you received. Here are the reasons:

1) The law firm has probably an order from Mattel to hunt down all website with the word "Barbie" within. They automatically consider that having the word "Barbie" is an infringement. I do not think so.

2) It is recommended to verify with Mattel that the law firm is really representing Mattel. Who really knows if this is true? Only Mattel can really tell you the truth about this. Someone might try to steal your website. I can happen.

3) If your website is not against Barbie, but shows positive things about Mattel, why would they take you down for this. It would be like saying: "Don't promote our products and don't say anything good about them". The law firm makes money when it shuts down a website (which costs money to Mattel). Mattel makes money when their products are promoted. You should contact Mattel (call them) and explain your case. If well explained, I believe they will understand. Most people are not stupid and there are good chances that someone withdraws the lawsuit.

Good luck again.

 

1) The law firm has probably an order from Mattel to hunt down all website with the word "Barbie" within. They automatically consider that having the word "Barbie" is an infringement. I do not think so.

That ridiculous - but it doesn't matter, the OP already said his site is about Mattel's Barbie - That makes it an infringement claim.

2) It is recommended to verify with Mattel that the law firm is really representing Mattel. Who really knows if this is true? Only Mattel can really tell you the truth about this. Someone might try to steal your website. I can happen.

Kenyon & Kenyon is one of the largest & oldest IP firms in the US. Of course they represent Mattel (a quick search would show you many of the cases they have won for Mattel).

3) If your website is not against Barbie, but shows positive things about Mattel, why would they take you down for this. It would be like saying: "Don't promote our products and don't say anything good about them". The law firm makes money when it shuts down a website (which costs money to Mattel). Mattel makes money when their products are promoted. You should contact Mattel (call them) and explain your case. If well explained, I believe they will understand. Most people are not stupid and there are good chances that someone withdraws the lawsuit.

A common uneducated mistake. Trademark infringement isn't about whether or not you portray their product in a good light or not. They don't mind promotion, they mind their trademark being used in a domain name. Register dollsforyou dot something and there wouldn't be an issue. They are legally obligated to go after infringement usage or risk losing their billion dollar trademark via genericization. Mattel has shown time and time again, over many years, they do not mind spending vast sums of money to protect their trademark.

 

Hello,
I just saw this post and I just wanted to let you know that there is a scam going on what they do is check and search for domain names that have a trade marked domain names then send you this email saying they want you to hand it over but they are not Mattel most likely mattel would not care I see people with domain name with ebay in the name they never say anything. Don't send them the domain name call mattel and see if they did send you a email if they say yes then send it to them just make sure you are dealing with mattel.

Steve

 

So let me get this right.... There is this big scam going on where the scammers want people to but barbie domains into their name? Yeah, sure. Anyone who deals with trademarks knows Mattel sues everyone. The last thing a scammer wants is an infringing domain in their name. I'd like to see your "proof" of this Mattel scam? What? You don't have any? Imagine that....

A quick call to the law firm will confirm if it is legit. Your ebay comments aren't even worth my time. Just look into the perfumebay case and tell me ebay doesn't mind.

 

Overused analogy number 10: people violate anti-speeding laws. While not all
get caught, those that do pay the price.

While it's true some people send C&D scams, it's already explained above how
this is legitimate and how aggressive Mattel is in protecting and enforcing its
Barbie trademark. And it's also stated that Kenyon represents them.

 

Why do people who don't have a clue what they are talking about post in legal forums?

 

Just give it to them and stop trying to make money with trademarked names. Many of us sell products without having to infringe on the trademark of the brand. It's not that hard.
Trying to skate with a trademarked domain is more trouble than it's worth, it doesn't really fool anyone, and you'll never rank as high as the original.
Best to have your own identity. If the site is good, and your SEO is adequate, you will make sales.

 

Everyone, please listen to mjewel - this guy knows his IP law and posted exactly what I wanted to say...

This is why you don't register TM'ed domain names.

 

If you aren't telling tall tales, that is associated with message boards, you obviously give it up.

But I would ask for reimbursement. If they do not do it, and if you got the balls, say they are out of luck, then.

I'm a dick, so I would.

Care to copy and paste what they sent you?

And, show us the domain? If it is still up, that is.

 

Asking for any compensation (even reg fee) from a trademark holder is something you should NEVER do. It makes their legal case against you much stronger.

Now if you have no money, no assets, no credit, no income - and never plan on having any assets, income or needing credit for the rest of your life, then your advice makes a little sense.