1. Advertising
    y u no do it?

    Advertising (learn more)

    Advertise virtually anything here, with CPM banner ads, CPM email ads and CPC contextual links. You can target relevant areas of the site and show ads based on geographical location of the user if you wish.

    Starts at just $1 per CPM or $0.10 per CPC.

Weird C&D letter from enom.com (demand media) - Said OK for usage before

Discussion in 'Legal Issues' started by domnom, Feb 14, 2008.

  1. #1
    In 2005 i was searching for a short and memorable name (like we all do here in this forum)
    I found the "kenom.com" which sounded like ke(y)nom and more like key for names to me
    In fact i registered also in 2006 keynom.com too to avoid spelling errors
    Never used for new domain registrations but for registered domain sales

    Because from first glance someone and especially a domainer would think that this may remind you the "enom.com" i thought it will better to ask before i use it
    So i did

    I asked :
    --- Your Original Message - 6/10/2005 3:24 PM ---
    "3. The use of xenom.com ( where x can be any combination ) as an enom ETP website violates the copyright of your company or not ?"

    enom :
    --- Agent Reply: May Blatherwick - 6/12/2005 7:48 AM ---
    "3. Again, please clarify your question?

    I replied :
    --- Your Reply - 6/12/2005 8:52 AM ---
    "If i use a name such us xenom.com ( where x can be any english letter like benom.com for example ) , as the basic name of an enom ETP website to promote and sell domain name services
    Do you consider the name ( because it contains the name of enom.com , in the example before benom.com ) violates the enom.com copyright or do you believe in general there is any problem to use it for this purpose and with this kind of services as an ETP reseller of enom ?"

    enom :
    --- Agent Reply: May Blatherwick - 6/13/2005 7:59 AM ---
    "If the name you are looking to register is available, you would be able to use it for domain registration. I hope this answers your question. Let me know if you need anything else"

    So i took the OK and proceed. As you may see i'm already few years to this forum and i display the domain name even at the signature
    In 12-Feb-2008 few days ago i received a C&D letter from Demand Media the new owners of enom saying that :

    It was recently brought to Demand Media’s attention that you have registered and are using the domain name <kenom.com>. Your use of a domain name that incorporates the whole of Demand Media’s trademark is an obvious attempt to divert Demand Media’s consumers to your website and is a potential violation of US trademark law and unfair competition laws as well as the federal Anticybersquatting Consumer Protection Act. Please note that the addition of an extra letter "k" does not itself distinguish this domain from the ENOM trademark. Furthermore, your current use of the domain directs users to a website that offers domain name services which are in direct competition with Demand Media. Your registration and use of this domain illustrates your obvious and willful intent to register a domain to divert Demand Media customers to your website. Willful trademark infringement may expose you to treble monetary damages and other penalties. Your attempt to sell the <kenom.com> domain is also evidence that you registered this domain in bad faith


    I replied :
    Dear Mrs. .....
    i must say i was surprised from your email
    My surprise was based on the fact that i had the same opinion like you before the registration of the name (that the domain may bump at your copyright fences)
    Because i value enom.com enough many years now i thought it was proper to ask at the time of the registration time of the domain

    "mentioned the details of my communication i put at the top of the post"

    I have the receipts for all these contacts to prove the validly of the previous data

    I don't feel threatened from your email but rather disappointed from enom
    The idea of the name was not based on enom as an extension with a "K" but more like ke(y)nom.com (the key for names)
    That's why i registered keynom.com too on 15-jul-2006 to avoid spelling typing errors and redirect it to kenom.com when i had the time to push kenom.com more

    Ending i want to underline this, i don't make a living from kenom.com or noticed a great increase in sales so in other words is not so significant for me
    However i find this issue serious enough to make it public starting from various domain name forums that i visit daily
    If this was indeed a big site you could ruin his business and this type of irresponsible behavior is not what i had in mind for enom that i support all these years



    She replied :
    Dear Mr. ......,

    I am happy to hear that you support the eNom domain registrar services. Certainly you can understand the importance of protecting the eNom trademark as well as protection customer's from being deceived or confused when they mistype the domain <kenom.com> and they are directed to a site that offers the identical and competitive services offered on ENOM.COM. As a trademark holder, Demand Media is required to protect its trademark rights as well as its consumers from confusion or deception, and it is believed that your registration of the domain <kenom.com> is a deliberate attempt to divert customers seeking eNom domain registrar services to your site.

    I am not familiar with your conversation with May Blatherwick. No one by that name currently works at Demand Media, Inc. However, you even mention that you "had the same opinion" that your registration of the <kenom.com> domain "may bump into your copyright fences" which indicates that you knew customers might potentially become confused with your registration of this domain.

    I did not intend to come across in a threatening manner. My tone is only to convey the importance that Demand Media places on its valuable intellectual property rights and on the value of protecting Demand Media consumers from being mislead or confused.

    I hope that you are willing to work together towards an amicable resolution in this matter.


    I replied :
    Mrs ......
    first of all i'm happy with your fast reply
    However i think you disregarded the content of my email and you lower the value of the data i provided

    I don't find it very professional to say you don't know who is "May Blatherwick"
    Sorry to say that i don't know your company too. From what you say you are the new owners of enom. I know enom from 2002 but didn't know Demand Media
    If you notice the day of the conversation i provided and that the reply came straight from enom.com (supportcenter@enom.com) i find hard to understand how you keep saying that "is a deliberate attempt to divert customers seeking eNom domain registrar services to your(my) site"
    Further more i provide you with the support case number "Case XXXXXXX - Question about RegistryRocket and more"

    Please notice again the replies i gave you before you reply and contact enom.com for verification
    I took the green sign from you the days that kenom.com was registered (check the days)
    I provided you with the prove for this. If this ruin your case i'm not the one you should blame

    I understand your position to work and produce results for your company and i would agree right away with you if i didn't ask for this before 3 years
    The importance to Demand Media and every legal or consulting company should be not only to protect the customers of your enom but also the reputation of enom that you clearly heart right now

    I'm certainly willing to work with you to find a common acceptable solution even i don't find any from the options your provided until now
    May i suggest to start with an apology from your side regarding the accusations and the outcome you extract from my email ?
     
    domnom, Feb 14, 2008 IP
    chandan123 likes this.
  2. ARonald

    ARonald Peon

    Messages:
    909
    Likes Received:
    35
    Best Answers:
    0
    Trophy Points:
    0
    #2
    I think you cannot take the opinion of a sales representative as the company's policy or its opinion about your name.

    The sales rep just meant that if a domain is available for registration you can register it. Better steer clear of names which resemble the trademarked one.
     
    ARonald, Feb 14, 2008 IP
  3. domnom

    domnom Peon

    Messages:
    1,788
    Likes Received:
    39
    Best Answers:
    0
    Trophy Points:
    0
    #3
    I believe it's their mistake
    If the company representative was not authorized to reply he should advice me to ask the responsible person
    Once he says it's OK, he is bound to this
    I didn't ask him as an individual
     
    domnom, Feb 14, 2008 IP
  4. ARonald

    ARonald Peon

    Messages:
    909
    Likes Received:
    35
    Best Answers:
    0
    Trophy Points:
    0
    #4
    The problem is whether the rep had the authorization to give you a go ahead. They generally do not have such powers and mainly handle sales.

    If you see the reply they generally generalise it to avoid trouble. So irrespective of what you ask they give the same monotonous reply. You cannot use a chat log as a basis of your conclusion. Nothing was given in writing.
     
    ARonald, Feb 14, 2008 IP
  5. daedal

    daedal Peon

    Messages:
    171
    Likes Received:
    6
    Best Answers:
    0
    Trophy Points:
    0
    #5
    The rep is a representative of the company. By asking before registering a representative of enom you have made sure that you asked for permission to register the name.

    The rep said you could register the name if it was available. As she was an employee of enom.com you had no reason not to accept the rep had the legal right to give you permission.

    As the mistake was enom.com's not yours, they will have to offer you a decent compensation package. They could not legally show that you registered the domain with intent to take their business.
     
    daedal, Feb 14, 2008 IP
    chandan123 likes this.
  6. chandan123

    chandan123 Prominent Member

    Messages:
    11,586
    Likes Received:
    578
    Best Answers:
    0
    Trophy Points:
    360
    #6
    nice thoughts by daedal

    but kenom.com is doing domain sales business i feel which may leeds into enom's favour

    anyway please keep all mail transactions safely
     
    chandan123, Feb 14, 2008 IP
  7. MOG

    MOG Well-Known Member

    Messages:
    2,219
    Likes Received:
    163
    Best Answers:
    0
    Trophy Points:
    180
    #7
    In the event that there were no crossover in industry between the two sites there would be no problem, however given that they both sell domains I do feel that they would have a case to take up infringement of copyright against your domain.

    having said that, surely a "this site is not related to enom.com in any way, implied or otherwise" notice on your footer would quash the legal argument?
     
    MOG, Feb 14, 2008 IP
    chandan123 likes this.
  8. daedal

    daedal Peon

    Messages:
    171
    Likes Received:
    6
    Best Answers:
    0
    Trophy Points:
    0
    #8
    The argument is going to be the one based around the fact kenom is doing domain sales. Its really down to enom to prove that the site was registered with the intent of taking its business, and possibly they can prove that just by the fact the site is basically doing what it is doing.

    Good point MOG
     
    daedal, Feb 14, 2008 IP
  9. EGS

    EGS Notable Member

    Messages:
    6,078
    Likes Received:
    438
    Best Answers:
    0
    Trophy Points:
    290
    #9
    You better trademark Kenom before they take it. ;)
     
    EGS, Feb 14, 2008 IP
  10. chandan123

    chandan123 Prominent Member

    Messages:
    11,586
    Likes Received:
    578
    Best Answers:
    0
    Trophy Points:
    360
    #10
    chandan123, Feb 14, 2008 IP
  11. mann3r

    mann3r Peon

    Messages:
    1,416
    Likes Received:
    100
    Best Answers:
    0
    Trophy Points:
    0
    #11
    wrong! if you are an employee you should know the policy, trademark and other regulations pertaining to the company you work for. It is understandable if you are working as blind folded. or maybe even a blind knows the rules of those handicraft business they are working for.
     
    mann3r, Feb 14, 2008 IP
  12. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #12
    1) A disclaimer is not enough to protect you either in court or in UDRP for trademark infringement.

    2) For those of you that think that enom will be bound by the words of a sales associate, you are wrong. There are several things wrong with the initial conversation.

    A) The initial conversation made no reference to trademark, only to copyright. This is not a copyright issue, it is a trademark issue. Even if the company were bound by the sales rep's statement, he never gave trademark permission.

    B) The poor english (on both parts) of the conversation would be read in a court as it was typed. The sales rep never said this domain could be used for a domain sale/exchange site or even a ETP site. What he actually said was that if the name was available it could be registered. What you (OP) thought he meant won't mean much. There is an outside chance that a judge might deem your view of what he said to be a reasonable interpretation, but it is more likely the judge would find that your interpretation is not clear and thus you should have at least followed up more before assuming. (And that is assuming that the judge doesn't find it equally reasonable that the sales rep misunderstood what you were asking.)

    C) If the company can prove that they train employees on what they are authorized to give permission and the sales rep acted outside the bounds of his authority, a court could very well say the business is not obligated to uphold the employee's statement. (Of course, that depends on whether they can show they properly train employees.)

    D) You stated that you thought this might be an issue in your email. Never admit something like that.

    My opinion is they will win if they take this any further.
     
    bluegrass special, Feb 14, 2008 IP
  13. daedal

    daedal Peon

    Messages:
    171
    Likes Received:
    6
    Best Answers:
    0
    Trophy Points:
    0
    #13
    Everyone automatically assumes big companies will win. Courts are not stupid. It is clear that enom (or its representatives) implied that registering the domain was ok, as a normal customer you would take the word of the company or its representative.

    The assumption of most people is, that a court will side with a big business because we as consumers should know the law 100%. It does not work like that, consumers and business follow the information provided by professionals, in this case that was the companies representative.

    Too many people back down because they feel they will lose. If you have a good and justified case for doing something, then there is never a 100% chance you will lose, no matter what people are saying. If in doubt contact a lawyer, because all I have seen in this post is people making up stupid assumptions that you will lose, if a lawyer says you have no case then fair enough.

    The issue I can see is that you have used the domain for a competative business, its not the fact you registered the domain, its the fact you are offering a service similar to theirs.
     
    daedal, Feb 14, 2008 IP
  14. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #14
    I do not assume big business will win all the time. However, in this case for the reasons I stated it is my opinion the enom would win if they were to go to the next step of suing or pursuing UDRP. I do not believe the initial email conversation shows that the sales rep either understood the question or authorized (faulty or not) the use of the trademark for a competing service.
     
    bluegrass special, Feb 14, 2008 IP
  15. Dave Zan

    Dave Zan Well-Known Member

    Messages:
    2,320
    Likes Received:
    121
    Best Answers:
    2
    Trophy Points:
    115
    #15
    And who do you think Ms. Blatherwick is an employee for? Do you get to say
    what policies and other regulations that employee should know since you are
    not the one paying her salary?

    While eNom has since been acquired by Demand Media, neither is required to
    handle their respective issues. Generally speaking, such companies keep them
    separate to avoid possible confusion.

    IMHO Ms. Blatherwick's response was very careful. How to interpret that is up
    to the OP, and he can always ask further clarification if he wasn't satisfied.

    Speaking from previous registrar experience, reps aren't supposed to answer
    questions with legal flavors. There's no telling what occurred in eNom's side at
    that time of the OP's query, but they likely did what their procedure called for
    for that type of issue.

    As I answered in your thread at NamePros, dotnom, you knew what you were
    doing that time, and you knew the repercussions. Now that this happened, it
    is up to you to decide what to do next.
     
    Dave Zan, Feb 14, 2008 IP
  16. tobycoke

    tobycoke Peon

    Messages:
    1,676
    Likes Received:
    76
    Best Answers:
    0
    Trophy Points:
    0
    #16
    IANAL but I believe Enom would prevail at a UDRP hearing.
    That being said, I've regularly admired your nice avatar but the Enom/Kenom connection never entered my head.
     
    tobycoke, Feb 14, 2008 IP
  17. Tim Rogers

    Tim Rogers Guest

    Messages:
    31
    Likes Received:
    0
    Best Answers:
    0
    Trophy Points:
    0
    #17
    To be honest, you probably should have spoken to someone more corporate rather than a support person - they're not clued up in the legal field I suspect.
     
    Tim Rogers, Feb 15, 2008 IP
  18. daedal

    daedal Peon

    Messages:
    171
    Likes Received:
    6
    Best Answers:
    0
    Trophy Points:
    0
    #18
    You are right in this case they probably would win.
     
    daedal, Feb 15, 2008 IP
  19. domnom

    domnom Peon

    Messages:
    1,788
    Likes Received:
    39
    Best Answers:
    0
    Trophy Points:
    0
    #19
    Dave Zan : I guess we both are multi-forumers. I also quoted your reply at namepros
    (I don't understand how this the bottom line and how you assume all these but the one thing you are right is the "if you are up to it")

    Generally speaking the reason i made this public is to share with you this experience
    There is a law firm that i use but i don't find this issue serious enough to let them deal with it for now

    I may move to keynom.com which has the correct spelling of kenom
    I used kenom because it was shorter and had less spelling errors
    Kenom may be used for another niche not related with domain name services

    I will keep you updated but meanwhile it's interested for me and i guess for others too to read your opinions
     
    domnom, Feb 15, 2008 IP
  20. bluegrass special

    bluegrass special Peon

    Messages:
    790
    Likes Received:
    50
    Best Answers:
    0
    Trophy Points:
    0
    #20
    The keynom.com domain will probably be thought of as infringing. It has phonetic similarities to enom and that has more weight than actual spelling. Only similarities need to be shown to prevail in court, not the exact (or even whole) trademark need be at issue.

    Since it doesn't appear that they requested that you hand over the kenom.com domain you should be fine with changing the content, but had they requested the domain it would be way too late in the game to change the content and expect that would make the situation go away.
     
    bluegrass special, Feb 15, 2008 IP