Received cease & desist email regarding trademark infringement

So I started a new .com website. Today I received an email from the owner of the same domain name but with .net extension stating that the name of my blog is an infringement of his trademark. He also demanded that I cease & desist any use of this name immediately.

He also referenced Morgan Freeman vs. Mighty LLC and Dona Karen vs. Richard Wilson

Am I really legally obligated to take down my blog? I didn't know someone else was using the .net site. Its not like I am taking content from his blog or anything like that.

Any advice would be much appreciated.

 

Welcome to DP.

You're not really "legally obligated" to do anything for that person unless some applicable
law has indeed been broken. But sometimes it's a good idea to comply if one doesn't like
to have any legal trouble of sorts.

Without specifics, some of which must not be revealed in an online forum, it's difficult to
say whether you "should" or not. This is a thing only a lawyer with real-world experience
can assist with.

Just to help a bit, though, perhaps something questions are in order.

Is the other party's domain name like isomethingdotnet and yours is somethingdotcom?

Does that domain bear any uniqueness like Google or Microsoft?

Does your domain's content possibly associate with the trademark holder's?

Did the trademark holder at least say if they have common law or a registered mark?

Those are some questions at the top of my head. More to come.

Good luck.

 

I think there is only one question here to be asked, just ask yourself, are you cyber squatting? If not then its just a rude attempt for that person to trick you into giving him the .com vesion.

 

If matters were to progress generally two things will be looked at.... are you intending to benefit from their goodwill (ie their brand name) or are "customers" likely to confuse the two.

The domain name itself is only part of the test, you also need to look at the topics covered, look & feel, geographies targeted etc etc

 

Yes, the other party's domain name like isomethingdotnet and mine is somethingdotcom?

The name does not bear any uniqueness to google or microsoft.

As far as content goes, both blogs are the same topic, but I don't even look at the content of the other site, to be sure that I am not even tempted to copy any of their content. None of the posts are the same at all.

The owner of the other domain did not specify if he had common law or registered mark, but just said, "your blog name is an infringement on my trademark"

I do not believe I am cyber squatting because I am actually putting original content on the site. I have no desire to sell this domain to the owner of the .net site.

The visitors may confuse the two because they are the same name, but that wasnt my intention when I bought the domain and started my blog.

Still not sure what I should do...Any additional advice would be much appreciated.

Thanks!!!!

 

It is your obligation to check for possible infringement BEFORE you register the domain. Unless the name is a descriptive or generic (petleashes - for selling leashes) then the other party has prior usage rights and you are likely infringing upon their rights. You could be sued and/or have the domain taken from you. Consult an IP attorney for specifics on your actual name if you think your domain name isn't infringement (it doesn't matter if you looked at their site or not).

 

If you could share your domain name then that will be more easier to advice you. I think mjewel will help you with this regard.

 

That's actually the essence of trademark infringement: likelihood of confusion. If people
are likely to confuse your site with that of a trademark holder, intentional or not, then it
is a sign of trouble already.

As suggested, better consult an IP attorney on this one. There's a couple who do initial
free consults if your case isn't necessarily complex to them.

 

Mjewel pretty much nailed it there. Unless you think he's a tiddler without the resources to follow through, you'd probably be wise to give up on it.